Claim Number: FA0209000124752
Complainant is PerkinElmer Life Sciences Inc., Boston, MA (“Complainant”). Respondent is Compana, LLC, Carrollton, TX (“Respondent”).
The domain name at issue is <nen.com>, registered with Secura GmbH.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
M. KELLY TILLERY, ESQUIRE, Panelist and Chair
HONORABLE CAROLYN M. JOHNSON (RET.), Panelist
PROFESSOR DAVID SORKIN, Panelist
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 6, 2002; the Forum received a hard copy of the Complaint on September 19, 2002.
On September 27, 2002, Secura GmbH confirmed by e-mail to the Forum that the domain name <nen.com> is registered with Secura GmbH and that Respondent is the current Registrant of the name. Secura GmbH has verified that Respondent is bound by the Secura GmbH Registration Agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 16, 2002.
On November 8, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist (Chair), Honorable Carolyn M. Johnson (Ret.) as Panelist and Professor David Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
1. it is the successor in interest to NEN Life Science Products, Inc. and that there are three trademarks registered to NEN Life Science Products. NEN is registered with the United States Patent and Trademark Office (“USPTO”) for the following three (3) classes of goods and services: Chemicals for life science research including molecular biology, neuroscience and pharmaceutical development; Chemicals used in biomedical research and testing, namely, fluorescent labeled reagents, radioactive labeled reagents, enzyme labeled reagents, scintillators and scintillator compositions, namely, fluors and solvents therefore, nucleotides, tissue and gel solubilizers, buffers, calibration standards and diagnostic kits comprised or reagents for scientific or research use; Diagnostic kits composed of bioreagents for clinical or medical laboratory use.
2. The domain name <nen.com> was registered by NEN Life Science Products, Inc. to represent its trademark NEN and its website was utilized by employees and customers to access product and sales information related to the marks.
3. the registration was inadvertently allowed to lapse by Complainant in April 2002, at which time Respondent registered the domain;
4. Respondent has not created a website at the URL <nen.com>;
5. Respondent’s registration creates confusion for the users of the former <nen.com> domain name and corresponding website, i.e. Complainant’s customers, who go to that URL expecting to access information on goods related to the NEN mark as they have in the past;
6. Complainant has found no available information on the nature of Respondent’s business (it is not registered as an LLC with the State of Texas) or its intentions regarding use of the <nen.com> domain;
7. Respondent has no registered trademark for “NEN” and has no discernible interest in “NEN”;
8. Respondent has not used the domain name in connection with a bona fide offering of goods or services;
9. there is no evidence that Respondent has been commonly known by the name “NEN”;
10. Respondent has been involved in UDRP disputes of a similar nature before, as reflected in two decisions by WIPO arbitrators;
11. it appears that Respondent intends to hold the domain solely for illegitimate commercial gain;
12. Respondent’s failure to distinguish the current <nen.com> domain name from the previous incarnation creates confusion for consumers who access the site and misleads them away from the trademarked NEN content they had accessed there in the past;
13. Respondent has not responded to repeated contacts by Complainant;
14. Respondent is not a competitor of Complainant but by its actions it is compromising Complainant’s trademark and it offers no legitimate reason for doing so;
15. the pattern of Respondent’s behavior indicates its bad faith and unwillingness to resolve this conflict;
16. Respondent has been involved in at least three similar disputes over lapsed domain names showing a continuing pattern of behavior; gaining access to a domain which mistakenly lapsed, failing to respond to requests for return of the domain and failing to establish any independent interest in the domain.
Respondent contends that:
1. Complainant abandoned the name by failing to renew its registration;
2. without knowledge of Complainant’s previous registration, Respondent registered <nen.com> with the intent of using the domain for its generic value;
3. there is no evidence of bad faith to support Complainant’s claim;
4. Respondent has a legitimate interest in the domain name;
5. Complainant is not entitled to monopoly protection over a generic acronym such as “NEN”;
6. Respondent only registers names that are freely available to the public; Respondent is building an email business based solely on generic domain names;
7. Respondent established the <nen.com> site in early June of 2002, approximately one month after it registered the name upon which visitors of the site have been able establish free web based email accounts since that time;
8. Respondent has a legitimate interest in <nen.com> and the other names it has registered;
9. two independent UDRP arbitration panels have unanimously concluded that Respondent’s use of its domain names are legitimate, Agile Software Corp. v. Compana LLC (WIPO D2001-0545) and Trans Cont’l Records, Inc. v. Compana LLC (WIPO D2002-0105);
10. Respondent has never advertised any domain name for sale;
11. Respondent is not in the business of selling domain name registrations and Complainant can offer no proof to dispute that fact;
12. Respondent does not dispute Complainant’s rights to its mark in the category which it conducts business, however these rights do not afford it an unrestricted monopoly over a generic letter combination;
13. the letter combination “NEN” is a short, generic acronym as well as a moderately common surname;
14. established in May of 2000, Respondent’s business model is to provide web-based, internet e-mail services to users; after fully implemented, Respondent’s service will enable users to have a personalized, permanent and portable Internet address;
15. in late 2000, Respondent began negotiating with software developers and email service providers to develop a full service system to implement its model; Complainant completed negotiations with an email service provider in May 2002 and began offering email services at <nen.com>, and at several other sites that Respondent owns;
16. Complainant offers no evidence that Respondent’s use of a short, three letter acronym, for email purposes is not a legitimate or fair use of those domain names or that Respondent has no lawful rights or legitimate interest to this domain name.
1. Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name is identical or confusingly similar to a mark in which Complainant has rights. Policy ¶ 4(a)(i).
2. Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interest in respect to the domain name. Policy ¶ 4(a)(ii).
3. Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. Policy ¶ 4(a)(iii).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it is the successor-in-interest to NEN LifeScience Products,
Inc., and that Nen Life Science Products, Inc. owns three Federally-Registered Trademarks for “NEN”. A review of the United States Patent and Trademark Office Trademark Electronic Search System indicates that NEN Life Science Products, Inc. is the current owner of the following Registered United States Trademarks:
April 4, 2000
April 11, 2000
September 24, 1996
November 10, 1992
Neither in the records of the United States Patent and Trademark Office in the Trademark Electronic Search System nor in the Record presented herein is there any indication, other than the claim of Complainant, that it is the “successor-in-interest” and thus present owner of the aforementioned Federally Registered Trademarks. In fact, Complainant only refers to three registrations in its Complaint and references only one of the USPTO Registration Numbers.
However, Respondent has not disputed Complainant’s ownership of the aforementioned marks or the aforementioned “successor-in-interest” allegation. Under these circumstances, this Panel may and does find that Complainant is the owner of the aforementioned “NEN” Federally Registered Trademarks.
The domain name in question <nen.com> is clearly identical to Federally Registered Marks in which Complainant has rights.
Under those circumstances, Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name is identical or confusingly similar to a mark in which Complainant has rights.
Complainant has acknowledged that it inadvertently permitted its previous registration of the <nen.com> domain name to lapse. Respondent does not claim or present any evidence to the effect that this “lapse” was anything but inadvertent. There is no evidence whatsoever of Record that Complainant intended to abandon either its trademark and/or the domain name <nen.com>. Further, the period of any claimed “abandonment” is quite brief. The failure to renew occurred in April of 2002. Respondent registered the same domain name shortly thereafter and Complainant attempted to contact Respondent not long thereafter to try to correct its inadvertence. Under these circumstances, it cannot be said that Complainant abandoned either its mark or its domain name. While there are and certainly should be consequences even for “inadvertence” such as is acknowledged herein, it need not be fatal to the important intellectual property rights of Complainant which has in all other respects apparently vigorously protected same.
Although Respondent claims that “NEN” is generic, this Panel cannot and does not find it to be so. To this Panel, and based upon this Record, “NEN” means absolutely nothing. While it may not be exactly fanciful and/or arbitrary, it is also certainly not generic in that it does not refer to or bring to mind a particular type or class of goods or services.
All four of Complainant’s USPTO Registrations for the mark “NEN” predate the registration and/or any alleged use of the domain name in question by Respondent. Complainant and Respondent are located within the United States. The Lanham Act specifically provides that Federal Registration of a Trademark constitutes constructive notice to the world of the existence and validity of the owner’s/registrant’s trademark rights. 15 U.S.C. § 1072. Thus, whether Respondent admits to or whether there is sufficient credible evidence of record that Respondent actually knew of the trademark rights of Respondent prior to registering the domain name in question, Respondent should and will be held to have known of same by the doctrine of constructive notice. Under these circumstances, the registration by Respondent of a domain name identical and thus confusingly similar to a Federally-Registered Trademark is in and of itself registration in bad faith.
Respondent has produced some limited evidence of use and/or preparations to use the domain name in question for an e-mail service. This Panel finds that the very limited evidence submitted in support of this claim is an insufficient basis upon which this Panel might find a bona fide use. The posting for a job offering regarding an e-mail service on another website and the putting up of a “homepage” at <nen.com> for proposed e-mail service can all be done in a few minutes and does not constitute sufficient evidence of bona fide use or preparations to use the domain name. Policy ¶ 4(c)(i).
It appears to this Panel that the domain name is being held passively. Such passive holding is and does support a finding of bad faith “use”. See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
This Finding is also supported by the ambiguity of the allegations regarding the Respondent’s “business model” and the very short period of time between the lapse of the domain name in question and his registration of a domain name identical to a registered mark. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Under all of these circumstances, this Panel finds registration and “use” in bad faith.
The domain name shall be TRANSFERRED to Complainant.
M. Kelly Tillery, Esquire (Chair),
Honorable Carolyn M. Johnson (Ret.)
DISSENT (Professor David Sorkin)
I respectfully dissent. I would dismiss the Complaint for failure to prove bad faith registration, as required by Policy ¶ 4(a)(iii).
The undisputed evidence before the Panel indicates that Respondent registered the disputed domain name because it was an available three-letter “. com” domain name – a rare and highly valuable commodity – rather than because of its similarity to any trademark; and that Respondent was not even aware of Complainant or its marks when it registered the domain name.
These facts preclude a finding that the domain name was registered in bad faith. See, e.g., Trans Cont’l Records, Inc. v. Compana LLC, No. D2002-0105 (WIPO Apr. 30, 2002); VZ VermogensZentrum AG v. Anything.com, No. D2000-0527 (WIPO Aug. 22, 2000).
I would further find that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking, and constitutes an abuse of this administrative proceeding. Complainant offered no competent evidence to substantiate its claim of bad faith registration and should have recognized its inability to do so when it filed the Complaint in this proceeding.
Professor David Sorkin (Dissenting), Panelists
Dated: November 26, 2002
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 Under the Lanham Act, intent to abandon must be proven, Saxlehner v. Eismen Mendelson & Co., 179 U.S. 19, 21S. Ct. 7, 45 L.Ed.60 (1900) and it takes nonuse for three (3) years to be prima facie evidence of abandonment. 15 U.S.C. §1127.
 Mere constructive knowledge arising from Complainant’s trademark registration is not indicative of bad faith in this case, because there is no evidence that Respondent’s reasons for selecting and registering the domain name were related to Complainant or its mark.
 An inference of bad faith cannot be supported by either of the facts put forth by Complainant: Respondent’s failure to respond to Complainant’s demands that it relinquish the disputed domain name, and Respondent’s involvement in three prior disputes involving registration of lapsed domain names. (Notably, Respondent prevailed in all three of those cases, as it should prevail here.) See Trans Cont’l Records, Inc. v. Compana LLC, supra; Agile Software Corp. v. Compana LLC, D2001-0545 (WIPO July 23, 2001); Brown Shoe Co., v. Compana LLC, FA 96562 (Nat. Arb. Forum Apr. 5, 2001)